In a recent decision, T 773/10 of October 24 2014 (published on January 7 2015), a Technical Board of Appeal of the EPO has decided that a new therapeutic use of a known medical device cannot confer novelty within the meaning of the European Patent Convention.
The invention at stake related to a dialysis membrane for the treatment of multiple myeloma. It was undisputed that all the structural features of the membrane were disclosed in a prior art document. The question to be answered thereafter was whether or not the statement of intended use of the known device for the treatment of myeloma could confer novelty upon the membrane.
In the answer to this question the Board initially referred to Article 53(c) EPC, which excludes from patentability methods of treatment of the human body by therapy, but at the same time lays down that the exemption to patentability does not extend to products, in particular substances or compositions, for use in such methods. Next, the Board noted that Article 54(5) of the revised European Patent Convention (EPC 2000) provides that the patentability of any known substance or composition for use in any specific method referred to in Article 53(c) is not excluded.
Based on these provisions the decisive question to be answered by the Board was whether the claimed membrane could be considered a "substance of composition" within the meaning of Article 54(5) EPC.
Referring to the travaux préparatoires for the EPC 200, the Board found that the legislator's intention was to allow patents for new uses of known "medicaments" or "drugs", but that there was no intention to allow the terms "substance" or "composition" in Article 54(5) EPC to extend to any other medical products. Accordingly, the claimed invention was found to lack novelty.
The Board also noted that its conclusion does not contradict an earlier decision, T 2003/08, which allowed a claim directed to a new use of a column for an extracorporeal treatment. In that decision it was not the column as such that was regarded as the "substance or composition" which could confer novelty according to Article 54(5) EPC. Rather, the column contained a ligand constituting an active ingredient responsible for the therapeutic effect.
|Jakob Pade Frederiksen|
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